A brief treatise on United States patents, for inventors and patentees

Front matter

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BRIEF TREATISE

ON

Preface

The Patent Laws of the United States have direct bearing upon the interests of a constantly increasing number of persons, who are desirous of acquiring some knowledge of the principles of those laws.

Exhaustive treatises on the subject, and various digests of decisions, have been published for the benefit of profes* sional men, and latterly the Patent OflSce has furnished detailed information concerning the administration of the Patent Laws in the office and in the courts*

Pamphlet copies of the text of the law and of the Rules of Practice in the Patent Office, are also published and gratuitously distributed to inventors and patentees who choose to ask for them.

The writers of these pages have for some time thought that there was room for a work, occupying middle ground between the publications of the Patent Office, and the lengthy and elaborate treatises and digests which have be^n published by private enterprise. '. Inventors and patentees desire to be reasonably fami-

VI PREFACE.

liar with at least the outlines of a subject so intimately concerning them, but few have either the time or inclination to seek the information in the pages of lengthy works of technical character and style.

It is chiefly for this class that the present work has been designed, and the object aimed at has been to present the subject in terms as plain as possible, and briefly, without meagreness. The details of Patent Ofiice practice have not been minutely dwelt upon, because they are to be obtained from the printed and published rules and regulations of that office, nor has it been considered as properly within the scope and object of the w^ork to treat at any length upon the technicalities of such subjects as actions for infringement. The endeavor has been to give a compact and correct statement of the law as to the persons to whom, and the subjects for which, patents may be granted — as to what constitutes patentable invention or discovery — as to when the right to a patent is acquired, and how it may be lost — as to the nature of the right which a patent confers — how that right may be transferred or distributed — what acts are violations of the right, and w^hat remedies may be had for such violations.

The plan pursued has been to give the text of the law upon the various heads treated, with comment upon the sections quoted, and with citatians from decisions of the United States courts.

Chapter I

Introductory. Origin of Patents. Patents not monopolies. Equity of Patents. Policy and utility of Patents. Patents and Capital, ....... p. 9-18

Chapter II

To whom Patents are granted. Who is first Inventor or Discoverer in Law. Relation of employer and employee in respect of invention. Diligence in perfecting Invention, and adapting it to use. Prior invention, knowledge or use. Prior Patent or printed publication. Abandonment. Public use or sale for more than two years before application. Rights of purchaser before application for Patent, . . . 19-33

Chapter III

For what Patents are granted. Art. (Process.) Machine. Manufacture. Composition of Matter. What are Patentable Discoveries. Patents not granted for abstract principles. New Principles, how patentable, . ^ . . 34-44

Chapter IV

Functional claims bad. Mechanical processes. New use of 6ld device or process. Double use. Substitution of material. Changes of form. Equivalents, .... 45-56

Chapter V

Combinations. Parts must co-operate. Parts may be new or old. Number, character and relation of parts, how material. Equivalents in cases of combination. Articles of Manufacture. Compositions of matter. Improvements, . . . 57-69

CHAPTER VI. . Application for Patent. What is required of the inventor. Drawing. Model. Oath of invention. Effect of prior foreign Patent, ..... . 70-74

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Ylii CONTENTS.

CHAPTER VH.

Specifications and claims. The description. Effect of intentional concealment or misstatement. Claims, how interpreted. What faults in description or claim will make Patent invalid, p. 75-63

CHAPTER VIII.

Application for Patent. Proceedings in the Patent Office. Official examination. Appeals to Board of Examiners-in-cbief — to Commissioner — to Supreme Court, District of Columbia. Remedy for refusal of Patent, by bill in Equity. Abandoned applications. Renewed application. Forfeiture of Patent by non-payment of second fees. Renewal of application, . 83-95

CHAPTER IX.

Interfering applications and interfering Patents. Interference proceedings in Patent Office. Power of Commissioner in cases of interference. Bnl in Equity against holder of interfering Patent, 96-lQO

CHAPTER X.

Remedies for defective Patents. Disclaimer. To what casea applicable. How and by whom made. Unreasonable neglect or delay to file. Nature and efi"ect of disclaimer. Re-issue. To what cases applicable. Who may obtain. Nature and effect of, 101-112

CHAPTER XL

Assignments. Grants. Licenses. Assignment before Patent. After Patent. Difference between assignment and grant of exclusive right. Relations of assignor and assignee. Grants of exclusive right. Requisites of assignment or grant. Recording of. Effect of failure to record within three months. . Licensee, who is. Rights of licensees. Licensor and licensee, relations of. Rights of purchasers of patented articles, . . 113-125

CHAPTER XIL Infringement. Actions for infringement, in what courts brought. Action at law. In Equity. Powers of Equity Courts. Who may sue for infringement. When State Courts may inquire into validity of Patent. Defences to action for infringement. Special defences. Notice of. Preliminary injunction. Appeal to Supreme Court. Writ of error. Marking patented articles. Penalty for fraudulent marking, .... 126-140

CHAPTER XIIL Caveats. Who may file. What requisite. May be renewed from year to year. Object and effect of, . . . 141-145

CHAPTER XIV.

Design Patents. Terra of. What constitutes similarity of design. Meaning of useful design, . . . 141-156

TREATISE ON PATENTS.

Chapter I

The familiar word "Patent," an abbreviation of the term ** Letters Patent," is suggestive of the origin to which our Patent Laws, in common with those of Great Britain, are to be traced.

The granting of exclusive privileges to make or vend different commodities, was an incident of the control which, from the earliest times, the English crown exercised over the trade of the country, and these grants were made by Letters Patent, i. e., open letters, sealed with the great seal, and addressed by the crown to the subjects at large.

It was the doctrine of the common law, as expounded by the courts, that the prerogative of granting such exclusive privileges was vested in the crown as the supreme executive power of the state, to be exercised in behalf of and for the benefit of the public, and was limited to the granting of temporary exclusive privileges to the introducers of new manufactures. But the prerogative, so long as its object was not defined, nor

its exercise regulated by statute, was grossly abused.

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^' By degrees," we are informed, '' the powers confided to the executive were perverted from their proper use, and, under the pretence of the better government of trade, the prerogative of the crown was employed in sanctioning, in return for pecuniary aid, individuals and corporations in very oppressive monopolies."

Patents of monopoly, as they were termed, presented a convenient mode of rewarding royal favorites at the expense of the subjects at large. The practice reached its height during the reign of Elizabeth, who granted many such patents to her servants and courtiers, giving them exclusive privileges to make, or trade in, the most ordinary articles, even some of the very necessaries of life, the prices of which were thus raised enormously.

At last, the famous '' Statute of Monopolies,'^ 21 James I., c. 3, put an end to the mischief, by declaring that all monopolies theretofore granted, or thereafter to be granted, of or for the sole buying, selling, making, working or using of anything within the realm, contrary to law and utterly void and of no effect." But from this general condemnation the act excepted *' Letters Patent for limited periods of the sole working or making of any manner of neiv manufactures within the realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such Letters Patent and grants, shall not use.'' This clause of exception is the basis of the present English Patent Laws, and is the earliest legislative recognition of the public policy of allowing temporary exclusive privileges to the inventors of new manufactures.

PATENTS, TO WHOM GRANTED. H

A century and a half later this policy was recognised in that clause of the Constitution of the United States which empowers Congress to " promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

Congress, in pursuance of this power, passed the Patent Act of 1790, entitled '' An Act to promote the progress of the useful arts," which was repealed and replaced by the Act of 1793. This in turn gave way to the Act of 1836, the provisions of which were amended and added to by several subsequent acts, and finally the Act of July 1870 was passed ^' to revise, consolidate and amend the statutes relating to patents and copyrights," and is embodied, with little change, in the Revised Statutes approved June 22d 1874.

The tracing of the relationship betvreen modern Patents and the old English grants of monopoly has been objected to, as tending to give rise to erroneous impressions.

It is said that a patent is not a monopoly, since it does not take from the public at large, the enjoyment of anything which they before possessed. And certainly, a patent is not a monopoly in that odiouS sense, which, from the abuses we have briefly mentioned, the word acquired. It restrains the public at large from confiscating the fruits of individual ingenuity, labor and expense, and so far, it does not deprive them of any freedom which they can rightly claim to enjoy, but is simply an enforcement of the principles of natural equity.

It can only be said to partake of the nature of a monopoly, in the sense of taking anything from the public, in so far as it restrains not only the mere copyist, but any original inventor, who is not also the first. This last efiect is in restraint of natural freedom, for being the first to make an invention or discovery confers no natural right to prevent others from making themselves, and if they make, using the same invention or discovery. But to confer that right by positive law upon the first inventor, is a price which the public can well afibrd to pay for the benefits which they derive from the concession, and a comparison of modern Patents with the old grants of monopolies furnishes an instructive contrast between mischievous and beneficial restraints upon the public at large, in favor of individuals, restraints, in form the same, but in spirit and effect totally at variance.

Modern Patent Laws are in fact an adaptation to the promotion of important public interests of an old governmental power, originally employed — if not devised — as a means of preying upon the public, and the " Statute of Monopolies" by limiting the power to the granting of exclusive rights for specified periods to the first inventors of new manufactures wrought the change.

In this limitation resides the whole equity of Patents ; a new or improved useful art or manufacture is an important addition to the wealth and power of the community and at the same time generally costs the originator more or less thought, labor and pecuniary expense.

Granting that the disclosure of any such useful novelty of

EQUITY OF PATENTS. 13 which he may be possessed is one of the duties which the individual owes to the society of which he is a member ; he may claim for this kind of .useful production the same return to which any other kind is acknowledged to entitle him, i. e., payment proportionate to its value to society and its cost to himself.

And in this connection it is important to remember that it is not a mere abstract conception which of itself makes the valuable consideration, but the physical embodiment of the conception in a way to demonstrate its utility, and make it practically available.

Production of this kind being at once most useful to the public, and apt in proportion to that utility to be expensive to the producer, merits a substantial return, and if the prospect of such a return is not held forth, will not flourish.

A better and more equable method of providing such a return could not be devised than that of a temporary monopoly, since it leaves the payment of the inventor to time, which must determine the real value of a new thing to the public.

It is just and proper that a new and useful invention should be paid for by the public in proportion to its proven value to them, and that the mode of valuation should be the same as in the case of other products of individual skill and labor.

The public verdict, as evidenced in demand, is the best general test of the value of an article, and the profit derived from manufacture and sale, if these be carried on with proper enterprise and discretion, will be in proportion to the value.

To use the words of Bentham " It (a patent of invention) is an instance of a reward peculiarly adapted to the nature of the service, and adapts itself with the utnuost nicety to those rules of proportion to which it is most difficult for reward, artificially instituted by the legislature to confer. If confined, as it ought to be, to the precise point in which the originality of the invention consists, it is conferred with the least possible waste of expense. It causes a service to be rendered, which, without it a man would not have a motive for rendering, and that only by forbidding others from doing that, which were it not for that service, it would not have been possible for them to have done. Even with regard to such inventions, for such there will be, where others besides him who possesses the reAvard have scent of the invention, it is still of use by stimulating all parties and setting them to strive which shall first bring the discovery to bear. AYith all this, it unites every property that can be wished for in a reward. It is ^' variable, equable , commensurable, characteristic, frugal, promotive of perseverance, subservient to compensation, popular and reasonable."

That patents have been an effective means of promoting the progress of the useful arts, no one conversant with the subject will deny ; but there are those who think or afiPect to think, that when the arts have reached a high state of development, their further progress may safely be intrusted solely to the spur of private competition.

But in the absence of protection by law, for an inventor to disclose his improvement is to give competitors something which they can then probably use to better advantage than

POLICY OF PATENTS. 15 himself, because they are relieved of the labor and expense attending the first practical application of an idea, and also because they may have more capital than himself. Secrecy is his only alternative, and one which cannot be depended upon, and is besides detrimental to the public, since it deprives them for a time at least of useful information, which it is to their interest to have speedily disseminated, and tends moreover to destroy mutual confidence in business.

Free competition means competition in which the parties can pursue their business upon terms as equal as respective skill, industry and means will allow. It is not, therefore, free competition, in the true sense, if the invention which has cost one man an expense of thought, time and money, is available without any expense to his competitors. That is to make a man's own labor the very means of destroying the equality. It is no answer to say that the experience of one competitor to-day may be that of another to-morrow, that the risk is equal. There could be no real equality of risk, but the risk, obviously enough, would weigh most heavily upon the most meritorious, the greatest producers would be the greatest losers by such a system of exchange, or reciprocal piracy.

But it may be said again, the inventor would derive from his ingenuity the like advantage as from his skill, in the reputation it would give his productions, and the consequent demand for them. The laws of all civilized nations have recognised that species. of property which consists in the reputation of a trader, acquired by his skill and industry, and have provided means by which that property may be secured. A simple mark, to the use of which in connection with specific goods the law gives its appropriator an exclusive right, will serve to distinguish those goods in the market, and enable him to reap the just reward of his skill. But skill differs from invention, inasmuch as simple mental apprehension will not pass the possession of it from one to another.

The skill upon which a trader's reputation is built does not pass from him with the goods which it has produced. Others may acquire equal or greater skill, but only by equal or greater exertion of the same qualities, by which his own skill has been acquired.

But the original thought embodied in a process, machine or device is thereby exposed for any ordinary intelligence to copy ; it passes with the thing in which it has found expression, and after the idea has passed into the possession of competitors, the only question with the public is where they can buy what they want most advantageously to themselves. In very rare cases, the answer to this question may be such as to maintain a monopoly in the hands of the originator. This can only arise from some accident of power, the possession of great means, special skill and facilities, and a monopoly of production, depending solely upon power to shut out or crush competition by superior resources, is fortunately rare. Those, however, who might possess such power would have no incentive to invent, but every temptation to let well enough alone.

Small producers would find but a poor compensation for their ingenuity, time and labor in the reputation which a transient exclusive possession, resting merely on priority in

PATENTS AND CAPITAL. 17

time, might give them. They would not be slow to discover, that to invent was actually to feed at their own expense the reputation of more formidable rivals. Thus the relative positions of different classes of trading producers would operate to prevent inventive activity in any.

Turning to the class of non-trading producers, employees having no direct business connection with the public, a class from which a large, perhaps the largest, proportion of the most useful invention proceeds. To talk to them of the advantage reputation would give them, is mockery.

Reputation can be of moment to them as workmen, only as it affects their ability to obtain employment at good wages. This their repute for skill will do, because by purchase their skill becomes the secure property of the purchaser so long as the connection lasts. But of what service to them would a reputation for ingenuity be, if employers could appropriate the fruits of that ingenuity without payment, but could not, by payment, secure them as property ? If employers could not find their account in the personal exercise of invention, they would hardly consider its exercise by employees an element of value.

Concentration of capital, based upon patents, though not without its attendant mischiefs, is upon the whole exceedingly beneficial, since it commands for the practical development of useful inventions, all the resources of skill and the advantages of commercial credit.

As a rule, the first forms of the most valuable inventions are comparatively crude, cumbersome, costly and inefficient, and so without the aid of capital, they would be likely to remain. It is, as well to the wealthy manufacturing firms and corporations, as to individual genius that we owe the compact, durable and cheap labor-saving devices of to-day and the constant improvements which are being made in them. Patents have made wealth directly tributary to the progress of the useful arts by making it possible to employ great capital profitably in mechanical production. Let the law cease to extend its protection to the labor of the inventor, and the wealth of the capitalist will no longer extend its necessary aid to that labor ; useful discoveries will be few, those made generally available still fewer, until finally the practical arts will come virtually to a stand-still. Certain it is that a field of labor in which none can be secure of finding profit, will soon cease to be cultivated by any.

The true purport of Patent Laws is perhaps not quite correctly designated by the common saying, that they recognise an invention as property. It seems more correct to say that they recognise its conception, completion and disclosure as value received by the public for which the donor is entitled to payment, and for the purpose of securing him this payment they endow him with a temporary property in the invention. The first to disclose an invention \s^ prima facie, the party entitled to this artificial property, since to him the public is apparently indebted for a forward step in the progress of the useful arts. The exceptions to this proposition, under the Patent Laws of the United States, will be mentioned in the body of the treatise.

CHAPTER II. To whom Patents are Granted

" Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication, in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor:'' Sect. 4886 R. S.

Considering the question, who are entitled to patents under this section, it will be noticed that '' inventors and discoverers'' only are named, but by sect. 4895, it is provided that *' patents" may be granted and issued or re-issued to the assignee of the inventor or discoverer, the assignment thereof being first entered of record in the Patent Office. As we shall see hereafter, however, the application for an original patent must always be made by the inventor, if living, or, if he be dead, by his executor or administrator.

Grantees of Letters Patent, therefore, must be '^ inventors or discoverers, their legal representatives or assigns.'^

The words any person indicate that aliens as well as citizens are entitled to the benefit of the law.

VV^ho is an inventor or discoverer within the meaning of the law? To this question the section quoted replies, he whose invention or discovery was not, before he made it, known or used by others in this country, nor patented or described in a printed publication in this or any foreign country.

In such a case he is the first inventor or discoverer within the meaning of the law, and is entitled to a patent, if he has not surrendered the right by abandonment of his invention to the public, or by allowing it to be in public use or on sale for more than two years before applying for the patent.

The invention, besides being new, must be useful, i. e., it must be capable of being used, which implies that it has been brought to that state of perfection or completeness, that if fully and correctly described in the specification, those skilled in the art may from the information thus given, without experiment or invention of their own, be able to practise the invention.

Crude and imperfect experiments do not confer a right to a patent : Agawam Co. v. Jordon^ 7 Wallace 583 ; Washburn et al. V. Gould, 3 Story 133 ; Seymour y. Osborne^ 11 Wallace 516. Inventions or discoveries contemplated by the law as patentable, are such as are perfected and adapted to use. Not that an inventor or discoverer, before he can obtain a patent must have actually practised his invention or discovery ; that is not requisite, nor usually the case, but to obtain a valid patent, it must appear that his invention or discovery can be practised

FIRST INVENTOR. 21 from his specification or description of it, by those skilled in the art, without other aid than their own judgment and skill.

The grant of a patent raises a prima facie presumption that the applicant is the true and first inventor or discoverer of an invention perfected and adapted to use, and therefore the Commissioner of Patents, before issuing a patent, must be satisfied that the specification properly discloses such an invention — one that is not only new, so far as the records of the ofiice show, but useful in the sense of being capable of use. And as the right to a patent rests upon the presumption that the claimant was the first to produce, and make beneficially known, some useful thing, so to defeat a patent granted on the ground of a prior invention by some other person it must be shown that the alleged prior inventor had actually produced the thing and made it capable of use. A prior conception will not suffice, nor mere experiments, if not carried to the point of perfecting the invention and adapting it to actual use. *' If a person having some vague idea of a principle make numerous trials and experiments, if those trials and experiments do not result in such knowledge upon his part as enables him to put in successful practice the idea of which he has such vague notion, he does not become an inventor in the sense of the patent law. Such a person has never embodied the principle so as to make it available for practical use, and the party who embodies the principle and makes it available for practical use, is the party who is entitled to a patent and protection :" Ransom v. Mayor, 1 Fisher 252.

" Though others may have liad similar ideas and may have experimented upon them, the person who first perfected the idea, and made it capable of practical use, is the inventor, and entitled to a patent.'^

The many decisions of like tenor, proceed upon the principle that the Patent Law is intended to encourage useful inventions, that is, improvements, which are in condition to be practised or used. An undeveloped, umembodied conception, however suggestive or valuable in itself, is not such an invention.

But the rule is not to be understood as meaning that as between two independent inventors, claiming the same thing, the right necessarily belongs to the one who may have first reduced the invention to practice. On the contrary, although a patentable invention within the meaning of the law is one perfected and adapted to actual use, the right of a party who has produced such an invention, is referred to the time of his conception of the invention, provided he has perfected it and adapted it to actual use with reasonable diligence.

In actions for infringement the defendant may prove that the patentee had surreptitiously or unjustly obtained the patent for that which was first invented by another, who was using reasonable diligence in adapting and perfecting the same : Sect. 4920 R. S. This provision applies to two classes of cases, that where the patent has been obtained in fraud of the true inventor, and that also where the later of two independent inventors has been the first to apply for and obtain the patent.

" It is the right and privilege of a party, when an idea enters his mind in the essential form of invention, inasmuch as most

INVENTION — CONCEPTION. 23

inventions are the result of experiment trial and eifort, and few of them are worked out by mere will — to perfect, by experiment and reasonable diligence, his original idea, so as not to be deprived of the fruit of his skill and labor by a prior patent, if he is the first inventor. But there must be reasonable diligence, looking to all the facts of the case : Cox v. Griggs^ 2 Fisher 174.

And though an imperfect and incomplete invention, resting in mere theory, or in intellectual notion or in uncertain experiments is not patentable, yet the invention, i. e., the finding out of something new by an operation of the intellect, is the basis of the right, which by perfection and adaptation to actual use is completed, so that he who invents first will have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has in fact first perfected the same, and reduced it to practice in a positive form.

As to what constitutes invention in the sense of intellectual origination, there must have been more than the mere idea of accomplishing a certain result, there must have been a conception of substantially the means or method involved of attaining that result, and the conception it would seem must have been so far clear and mature that the inventor is prepared to give explanations, sufficing to enable one skilled in the art to carry out the invention.

The person who is the first to conceive and give expression to the idea of an invention, in such clear and intelligible manner that a person skilled in the business could construct the